Archive | August 2014

If at first you don’t succeed…..

In two decisions by the German Supreme Court (BGH X ZR 77/12 and BGH Xa ZR 10/07) , the same prior art document was examined with respect to the same claims of the same patent in two nullity proceedings. Germany has a bifurcated patent system so that validity is examined first at the German Patent court and the second instance is the Supreme Court and separately from the court that decides on infringement.

In the earlier decision (BGH Xa ZR 10/07) one piece of prior art was considered not relevant to novelty as certain features of the independent claim were not explicitly disclosed.

In the later decision (BGH X ZR 77/12) the same piece of prior art was considered to implicitly disclose the features that had been decided in the first case as not being explicitly present in that document.


This is almost certainly an usual event. It shows however how in an adversarial court system it is important to present the court not only with the best evidence but also every argument that the court is to consider.